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An Interview with the Acting Commissioner for Patents


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: May 12, 2009 @ 10:52 am
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Just over two weeks ago I wrote an article explaining that quality review at the USPTO was changing for the better.  Shortly after this article published I received a telephone call from the Office of Public Affairs at the USPTO.  We chatted about this article and one thing lead to another and ultimately I spoke with Acting Commissioner for Patents, Peggy Focarino, for about 40 minutes regarding what the Patent Office is trying to do to enhance quality and make a better, smoother process.  After my discussion with Commissioner Focarino I was, for the first time in a long time, optimistic about the patent process.  Commissioner Focarino agreed to go on the record, and what appears below is my interview with her.

Before I move forward let me personally say that it appears to me that there are many, including Commissioner Focarino, who are committed to making things better.  As you will read, the Patent Office is taking steps to try and break the perception that all that matters is production.  There are initiatives to encourage more frequent and liberal use of interviews early in the process to help identify allowable subject matter as soon as possible.  There will be initiatives to encourage interviews later in the process to alleviate the need for filing RCEs, when possible.  An Ombudsman will be placed in each Technology Center.  Quality review will shift toward providing assistance to help what is happening, rather than critiquing what has happened.  In my opinion, all of this is excellent news!

Finally, before getting to the interview allow me to introduce Commissioner Focarino.  Margaret A. (Peggy) Focarino has been a long time employee of the United States Patent and Trademark Office, first starting with the USPTO in 1977 as a Patent Examiner.  She became a Supervisory Patent Examiner in 1989 and was promoted to the Senior Executive Service in 1997.  In January 2005, Ms. Focarino was promoted to Deputy Commissioner for Patent Operations, a role that made her responsible for all patent-examining functions in the eight Patent Technology Centers and all operational aspects of patent application initial examination, patent publications, and international Patent Cooperation Treaty (PCT) applications processing.  Upon the resignation of Jon Dudas from the USPTO in January 2009, then Commissioner for Patents John Doll rose from his post as Commissioner for Patents to become the Acting Director of the Patent Office.  At this time Ms. Focarino was promoted to Acting Commissioner for Patents, which is the position she currently holds today.

 

I’d like to start, if I may, with discussion about the “second pair of eyes” screening that is employed by the PTO.  A lot of practitioners are familiar with this insofar as business method applications are concerned, but less so informed about the extent of this review.  Can you tell me a little about how second pair of eyes started?

The “second pair of eyes” review was initially implemented in the Business Methods area several years ago as a way to ensure consistency in a relatively new and expanding area of technology.

 

Was second pair of eyes implemented across the board for all applications deemed allowable?

“Second Pair of Eyes” enhanced reviews were implemented in all areas of technology in May of 2005.  One of the main reasons for this approach was the fact that our allowance error rate in FY2004 was 5.3%.  At mid-year FY2005 we had a rising error rate of 5.7%.  With the implementation of Second Pair of Eyes in May of 2005, we were able to finish the fiscal year with a 4.6% allowance error rate.  That error rate continued to decline in the next three fiscal years but enhanced reviews like Second Pair of Eyes is very resource intensive and therefore not sustainable over a long period of time.

 

What changes, if any, do you envision to second pair of eyes moving forward?

“Second Pair of Eyes” will not change with respect to how the process itself works.  What is taking place is a much more focused approach to the use of this enhanced review as opposed to the expansive approach used previously.  We can utilize various quality indicators (for example, the number of 2nd plus non-final actions in an application) to define areas that may need more targeted reviews and focus resources on those areas to train for improvement.

 

I understand that there will also be a reorganization of the Office of Patent Quality Assurance (OPQA) in 2009.  Can you tell me what the Office has planned?

There will be no change to the organizational structure of OPQA or its major function, which is to measure quality.  OPQA will continue to provide estimates of examination quality at the Corps level with the desired level of precision and confidence (95% confidence and a sample error margin of +/- .5%). What is changing is the volume of end process reviews.   This will enable OPQA to increase the resources available to the Technology Centers to assist with TC specific quality improvement initiatives.  By having the reviewers working closer with the Technology Centers, OPQA will have a better grasp of training needs and areas needing improvement.   This approach will enable OPQA to better assess what is happening with respect to the quality of the examiners work product rather than what has happened.

 

What kinds of training are you referring to, and who do you envision doing the training?

Training plans include interview training, training on compact prosecution, search training in both group and an individualized manner, claim interpretation, restriction practice.   OPQA staff will deliver some of this training as well as our SPEs, QASs and Patent Training Academy resources.  There will also be an ombudsman in each TC who will be an available resource to applicants on application-specific issues to facilitate the resolution of issues when problems arise.

 

With respect to the search training and second look at search strategies, who will be doing this and will it count toward an examiner’s error rating?

Training on enhancement of search quality will include search strategy training, search information exchange where an OPQA reviewer meets with the examiner to review and evaluate searches, search tips which would include capturing and posting best practices for searching on the examiner Sharepoint site.  We will also use our contractor search strategy experts to provide sessions in classified searching and individual scoring of an examiners search strategy for the sole purpose of assisting examiners in improving their queries.

 

When you talk about interview training, what exactly does that mean?

I have heard a lot of criticism from our stakeholders that many examiners are reluctant to grant interviews, and that when they do grant them there is a reluctance on the part of examiners to make any commitments during the interview.  The interview training will emphasize to examiners several key practices:  interviews held earlier in prosecution are a benefit to better focus on issues early in the examination process, interviews lead to early indication of allowable subject matter, interview usage later in prosecution may reduce unnecessary RCEs.  We are developing a program to track interview requests so that we have a way to focus in on areas where there appears to be a higher denial rate and provide analysis of the underlying cause of these denials.  Right now there is no way for us to know, other than anecdotally, if there are areas where applicants request for an interview typically get denied.

 

I am also interested in the Ombudsman, because that is something I suggested in perhaps a slightly different context, in some of my writings at the end of last year.  Can you tell me more about this initiative?

We are still in the process of working out the implementation details, but each TC will have an ombudsmen who will serve as a resource to applicants on TC-specific issues.  I envision this resource to be a facilitator of sorts who can resolve administrative issues quickly and get an application back on track when problems arise.  This resource is independent of an examiner’s chain of command so can be viewed as a neutral facilitator by the applicant.

 

It sounds like the Office is really taking a step back and trying to evaluate what has been done that is good these past few years and trying to figure out what needs to be done better to ensure quality.

Yes, given the budget situation and the need to ensure that all of our resources are being utilized to maximize both quality and output, we are going to begin using more TC and Workgroup/Art Unit real-time quality indicators in addition to our OPQA data to provide review and training where it is most needed.  We have done a lot in the past few years to shift the perception that production is all that matters by our focus on quality initiatives, but we can always do things better and should be continually looking for ways to improve.  The timing is perfect because we need to be able to be more operationally nimble when our hiring ability and resources have become limited.

 

Do you think these initiatives will help dig into the pendency of applications by letting examiners know the Office is really interested in helping them do their job and not penalize them?

I do think the focus on more proactive, front end quality improvement initiatives as well as increased interaction between examiners and OPQA reviewers via hands on training will relieve some of the negative perceptions of the heavy scrutiny at the back end of the process. Hopefully, these efforts will lead to improved decision making at all stages of the process, which should have a positive impact on the pendency of applications.

 

Have examiners been forthcoming with suggestions on how to improve the process?

Yes, I hold weekly Town Hall meetings with examiners from all TCs and they have given input on how to improve the process.  We also have former examiners working in our Patent Training Academy to review office actions and provide feedback to our new examiners.  There is also much greater dialog between the Training Academy and the TCs than has taken place in the past, which has enabled us to make modifications in the training to ensure greater consistency.

 

I have heard a rumor that the Training Academy will be shut down, is that true?

The Training Academy will not shut down.   We are very pleased with the results we have gotten from the Training Academy and will continue to utilize this structure to train all of our new hires.  We have reduced the number of training resources in the Academy solely due to the reduction in our hiring goal this fiscal year from 1200 examiners to 600 examiners.

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Posted in: Gene Quinn, Interviews & Conversations, Inventors Information, IP News, IPWatchdog.com Articles, Patents, Technology & Innovation, USPTO

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

9 comments
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  1. Gene:

    Excellent. The PTO could certainly make use of more careerists such as Acting Commissioner Focarino in positions of authority. Clearly we, practitioners, and they, the PTO, are on the same side of the barricade in terms of making the patent system work better for all who have reason to be involved in the system. I am happy to lend a hand in devising solutions, both for real and perceived issues. The PTO side of the system can be fixed with tweaks and proper funding. No “re-invention” (so, so punny) necessary. Go with what works, tweak what doesn’t until it does, de-mystify the process from the outside, and away we go. Tweaking Quality Review is a terrific place to start. Despite the best of intentions, the collateral effects have been too much for the system to bear. Examiner’s have felt undermined and 2nd guessed, and the allowance rate has tumbled. This should help rectify that problem. Now, let’s re-start interviews and re-instate “compact” prosecution, and get some legislative help to match IDS practice with PTO needs!

  2. Item 1. Wow, this is a refreshing change from the hostility to process and to applicants that we’ve gotten in the last three years. I look forward to working with Ms. Focarino on the encouraging and reality-based basis she outlines above.

    Item 2. John White writes, “Now, let’s … get some legislative help to match IDS practice with PTO needs!”

    Congress already did, years ago. 35 USC s 41(d)(2) requires the PTO to set fees for IDS’s at the average cost of processing. Instead of following the law, the PTO decided to make it practically impossible for applicants to comply with the duty of disclosure, and gave us the IDS rule in spring 2006.

    If some examination task is burdensome, then the law (both statutory law and the laws of economics) require the PTO to set the fee appropriately. What’s the cost of considering an IDS reference over 20? $15? $25? $40? No one will balk at that fee level. (What’s the cost to an applicant for writing an ESD per reference? $1000? $2000? Rick Belzer got those kinds of numbers in a peer-reviewed study submitted to OMB…)

    The purpose of the Paperwork Reduction Act is to force agencies to study the costs and benefits of regulation, and Executive Order 12866 requires an agency to consider market-based approaches like fee levels before regulatory approaches. Now that OMB (the White House office that oversees these two laws) is giving the PTO closer adult supervision, maybe lawful rulemaking and rational economic decision-making will return.

    Item 3. I suggest two additional initiatives –
    – solicit ideas from the patent bar, just the way you’re soliciting input from examiners
    – do quality review on rejections as well as allowances

    David Boundy

  3. David-

    I don’t think John was talking about the IDS rules or what you are referring to. I have written for some time, and I think John also believes, that Congress needs to step in and do something with inequitable conduct so that there can really be a meaningful exchange of relevant information between applicant and examiner. The Federal Circuit continues to ignore Rule 56, and the PTO seems to want only the most relevant art presented. Providing the most relevant art would be a great idea, but if and only if the Federal Circuit can be forced to realize that following Rule 56 and the wishes of the PTO is not inequitable conduct.

    -Gene

  4. Gooday: Thought I should send this to you, an article in today’s New York times, dealing with the patenting of DNA. Viewed on MSN.com

  5. I applaud you for getting the interview (and I am usually very supportive of all the work that you do). However, I think that your questions were softballs. Granted, they gave Focarino an opportunity to provide some interesting information, but I doubt if any of those questions ever made her squirm.

    The USPTO has a lot to answer for the last couple of years, but your questioning really didn’t tease out any of those answers.

  6. Just looking-

    I appreciate you reading IPWatchdog. I understand what you mean with respect to “softball” questions. The goal of the interview was to talk about what the Patent Office is doing to attempt to rectify an important problem, which is one of perception. Many within the Office are afraid (or claim to be afraid) to do their job because they fear quality review. Readjusting resources to help rather than criticize is a good move, in my opinion. I also could not criticize greater use of interviews, including early in the process, because for months I have been writing that should immediately happen and would lead to a more collaborative and cooperative arrangement if the goal were to identify allowable matter early in the process.

    I understand that there are difficult questions that could have been asked, and perhaps should be asked. I made a judgment that this was not the time or place to ask such questions. I have for at least 18 months been attempting in my writings to extend an olive branch to the USPTO. I have offered to speak with management, coordinate programs, panels and round-table discussions in an effort to foster an exchange of ideas between the patent bar and the Office, which I think is badly needed. The Commissioner implementing initiatives to make things better is an important first step, and reaching out to discuss them is a very welcome change compared with what has happened for a number of years now.

    I will continue to write about problems I see and offer suggestions, and I hope a dialogue can ensue that will survive through whoever the next political appointee is who runs the Office. There will be plenty of time for hard questions and Monday morning quarterbacking, but for right now I think the best thing I can do is show I am genuinely interested in making a better system and not interested in looking back if the USPTO is interested in looking forward.

    Of course, your mileage may vary, but this was my decision and approach.

    -Gene

  7. The big elephant here is that the “error rate” metric measures bad allowances but not bad rejections! There is no “rejection error rate” that anyone at the USPTO speaks of. If an outside agency were to measure USPTO actions incorporating both bad rejections and bad allowances, this “error rate” would be in an upward spike since Mr. Doll took office. I base this on two things: 1) my own experiences, where in some art units it is almost impossible to get an allowance because examiners and even SPEs fear “getting in trouble” (they have told me this numerous times). I have been practicing for more than 10 years and there was never anything like this 5+ years ago; and 2) Since 2004 the USPTO’s “error rate” improved by a few percent but the allowance rate has dropped by 20%. Obviously the shift can be attributed to bad rejections.

    Bad patents can be addressed on reexamination. In fact, I just completed a reexamination in which a final action was issued in less than a year from when the request was filed. Thus, the system must be modified to stop disfavoring allowances.

    Mr. Doll is almost history so there is no need for me to bash him anymore (although I could go on and on) but Ms. Focarino (at least from the above) seems to be more realistic and less stubborn than Mr. Doll. Hopefully there will be a place for her in the new administration, and I hope she will help the new Director address these issues. A disaster (for both the USPTO and for innovation) is looming in 2010+ unless these issues are addressed.

  8. Does Peggy see that decrease in number of hiring examiners will cause a greater backlog. This will discourage applicant to file new applications (Potential applicants will be discouraged to file new applications due to the long delay) ?

  9. Nobody knows what the allowance “error rate” is or how it is determined. But based on the worthless invalid claims that are still being issued regularly in the computer-tech field, the Allowance rate is surely not too low. It remains too high.